UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
`and
`LG ELECTRONICS, INC., LG ELECTRONICS U.S.A., INC., and LG
`ELECTRONICS MOBILECOMM U.S.A., INC.
`Petitioners
`
`v.
`
`BLACK HILLS MEDIA, LLC
`Patent Owner
`___________________
`
`Case No. IPR2014-00737
`Case No. IPR2015-00334
`U.S. Patent 8,050,652
`___________________
`
`DECLARATION OF IVAN ZATKOVICH
`
`
`
`
`
`
`
`IPR2014-00737 BHM Ex. 2013
`
`

`
`IPR2014-00737 (U.S. Patent 8,050,652)
`
`
`
`TABLE OF CONTENTS
`
`1.
`
`2.
`
`3.
`
`INTRODUCTION ..................................................................................... 1
`
`BACKGROUND AND QUALIFICATIONS ........................................... 2
`
`LEGAL STANDARDS .............................................................................. 5
`
`3.1. Obviousness ................................................................................................ 5
`
`4.
`
`5.
`
`6.
`
`SUMMARY OF MY STUDY .................................................................... 9
`
`ONE OF ORDINARY SKILL IN THE ART ......................................... 10
`
`OVERVIEW OF THE ‘652 PATENT .................................................... 11
`
`6.1. A Network-Enabled Electronic Device ................................................... 20
`
`6.2. Receiving a playlist assigned to the electronic device ............................ 21
`
`6.3.
`
`Identifying ones of the plurality of songs in the playlist that are
`not stored on the electronic device .......................................................... 24
`
`6.4. Receiving information enabling the electronic device to obtain the
`ones of the plurality of songs from a remote source and obtaining
`the songs ................................................................................................... 25
`
`6.5. Personal audio network server for managing playlists and devices ...... 27
`
`6.6. Receiving and playing Internet radio broadcasts .................................. 28
`
`6.7. Requesting supplemental information related to a song in real
`time while the song is playing .................................................................. 31
`
`7.
`
`OPINIONS AS TO CLAIM CONSTRUCTION .................................... 32
`
`7.1. Playlist ...................................................................................................... 32
`
`7.1.1. The Media File Sharing Art Uses Playlist to Denote A List of
`Media Items Arranged To Be Played In A Sequence ............................. 32
`
`7.1.2. The ‘652 Patent Uses “Playlist” Consistent with Its Meaning in
`the Media File Sharing Art ...................................................................... 40
`
`i
`
`IPR2014-00737 BHM Ex. 2013
`
`

`
`IPR2014-00737 (U.S. Patent 8,050,652)
`
`
`
`7.1.3. A List of URLs is Not a Playlist ............................................................... 44
`
`7.2. Receiving a Playlist “Assigned to the Electronic Device” ...................... 53
`
`8.
`
`OPINIONS AS TO WHITE .................................................................... 56
`
`8.1. Summary of White ................................................................................... 56
`
`8.2. Petitioner’s Arguments Regarding White .............................................. 63
`
`8.3. Claims 1 and 42 are not obvious over White .......................................... 68
`
`8.3.1. White teaches a system and method clearly distinct from that of
`claims 1 and 42 ......................................................................................... 69
`
`8.3.2. No electronic device of White that plays and/or selects a song
`receives information from a central system enabling the electronic
`device to obtain a song ............................................................................. 71
`
`8.3.3. No electronic device of White obtains the songs from a remote
`source ........................................................................................................ 78
`
`8.3.4. No electronic device of White receives a playlist .................................... 78
`
`8.4. Claims 13 and 55 are not obvious over White ........................................ 81
`
`
`
`ii
`
`IPR2014-00737 BHM Ex. 2013
`
`

`
`IPR2014-00737 (U.S. Patent 8,050,652)
`
`
`
`I, Ivan Zatkovich, hereby declare:
`
`1.
`
`INTRODUCTION
`
`1.
`
`I have been retained by Counsel for Patent Owner to provide opinions
`
`on certain issues concerning Inter Partes Review No. IPR2014-00737 of U.S.
`
`Patent No. 8,050,652 (“the ‘652 Patent”).
`
`2.
`
`I am aware that the Petition filed in the above-identified proceeding
`
`(“the ‘737 Petition”) asserted various grounds and that the Board instituted this
`
`proceeding on a subset of the asserted grounds. I am also aware that Petitioner
`
`submitted with the ‘737 Petition a declaration of Kevin Jeffay, Jr., Ph.D. (“the
`
`Jeffay Report”) opining on various aspects of these proceedings.
`
`3.
`
`I have been asked to analyze the ‘652 Patent, the art cited by the
`
`Petitioner, the Jeffay Report, and the Institution Decision dated November 4, 2014
`
`(“the Institution Decision”), as they relate to the particular grounds instituted by
`
`the Board. My opinions are set forth below. I make these statements based upon
`
`facts and matters within my own knowledge or on information provided to me by
`
`others. All such facts and matters are true to the best of my knowledge and belief.
`
`4.
`
`I am a Principal Consultant of eComp Consultants. My firm is
`
`compensated at a standard rate of $475 per hour for my work on this matter. This
`
`1
`
`IPR2014-00737 BHM Ex. 2013
`
`

`
`IPR2014-00737 (U.S. Patent 8,050,652)
`
`
`
`compensation is not dependent on my opinions or testimony or the outcome of this
`
`matter.
`
`2.
`
`BACKGROUND AND QUALIFICATIONS
`
`5.
`
`6.
`
`A copy of my curriculum vitae is attached as Exhibit 1.
`
`I received a Bachelor’s degree in Computer Science, with a minor in
`
`Electrical Engineering Digital Circuit Design, from the University of Pittsburgh in
`
`1980. I completed a Master’s thesis in Computer Networks in 1981 at the
`
`University of Pittsburgh, the results of which were published in Byte Magazine.
`
`7.
`
`I have over 28 years of experience in computer science, including
`
`media file sharing and Web multi-media publishing (e.g., content, images,
`
`audio/video streaming), early wireless/cell phone communication, CTI (Computer
`
`Telephony Integration), eCommerce, and Geolocation.
`
`8.
`
`I have been a Principal Consultant with eComp Consultants for over
`
`ten years. eComp Consultants provides professional consulting services relating to
`
`computer and technical matters in a wide range of industries including embedded
`
`internet systems, cellular telephony, and cloud-based services. Such consulting
`
`services include working with clients on specific information technology projects,
`
`process improvement, project management, and other technology issues. eComp
`
`Consultants also provides professional expert witness services.
`
`2
`
`IPR2014-00737 BHM Ex. 2013
`
`

`
`IPR2014-00737 (U.S. Patent 8,050,652)
`
`
`
`9.
`
`At eComp Consultants, I have been frequently called upon to provide
`
`my expert opinion on matters concerning patent disputes. I have been qualified as
`
`a technical expert in over 24 matters including media file sharing, Web multi-
`
`media publishing, embedded internet systems, cellular telephony, and cloud-based
`
`services, and have given testimony as an expert at trial and by deposition,
`
`including in areas that relate to the technology described in the ‘652 Patent. A
`
`complete list of the cases in which I have testified in the last four years is included
`
`in Exhibit 1. Relevant exemplary cases include:
`
` Certain Media Devices, Including Televisions, Blu-Ray Disc Players,
`
`Home Theater Systems, Tablets and Mobile Phone, Components Thereof
`
`and Associated Software, Proceeding No. 337-TA-882 (pending) – I
`
`served as an expert for Complainant Black Hills Media, LLC (the Patent
`
`Owner in the above-identified proceedings) and provided several expert
`
`reports, which included my analysis and opinions regarding claim
`
`construction, validity, and infringement of various claims of the ‘652
`
`Patent inter alia.
`
` Zamora v. CBS Radio et al., 09-20940-CIV-MORENO (S.D. Fl.) (settled
`
`2010) – I served as an expert for Plaintiff on issues of patent validity and
`
`infringement for Internet radio technology. I also provided an expert
`
`3
`
`IPR2014-00737 BHM Ex. 2013
`
`

`
`IPR2014-00737 (U.S. Patent 8,050,652)
`
`
`
`report and was deposed regarding the use of streaming media and Web
`
`radio players. The patents at issue claimed priority to 1999.
`
` ABC v. ENC et al., H-06-1032 (S.D. TX.) – I served as an expert for
`
`Plaintiff in a patent infringement dispute concerning computer remote
`
`controls, remote command processing, and remote communication. The
`
`patents at issue claimed priority to 1998. I provided non-infringement
`
`and invalidity rebuttal reports and was deposed regarding the same.
`
`10.
`
`In my professional career, I have worked for companies such as
`
`Digital Equipment Corp. and GTE Data Services (now Verizon) on projects
`
`designing, developing, and integrating software and hardware for major computer
`
`and telecommunications systems as well as Eva-Tone, Inc. on projects designing
`
`and developing eCommerce, content management, and web publishing systems.
`
`Relevant exemplary multimedia projects from my career include:
`
` Eva-Tone Inc. (2002-2007) – Implemented online video streaming and
`
`music purchase systems for a music eCommerce website.
`
` GTE Data Services/Verizon (1987-1996) – developed digital voice and
`
`multimedia communications using high speed ISDN & FDDI.
`
` Digital Equipment Corp. (1980-1987) – designed and implemented video
`
`disk driver interfaces.
`
`4
`
`IPR2014-00737 BHM Ex. 2013
`
`

`
`IPR2014-00737 (U.S. Patent 8,050,652)
`
`
`
`11. By virtue of the above experience, I have gained a detailed
`
`understanding of the technology that is at issue in this proceeding. My experience
`
`with media file sharing, embedded internet systems, cellular telephony, cloud-
`
`based services, and Web multi-media publishing (content, images, audio/video
`
`streaming) is directly relevant to the subject matter of the ‘652 Patent. I am also
`
`particularly familiar with the ‘652 Patent as a result of the expert testimony that I
`
`provided on behalf of the Patent Owner in the Inter Partes Review No. IPR2013-
`
`00594 (“the ‘594 IPR”) and in the ITC Proceeding No. 337-TA-882, in which I
`
`provided my opinions regarding claim construction and validity of the ‘652 Patent.
`
`I understand that the reports that I prepared for the ‘594 IPR and ITC Proceeding
`
`were submitted with the Patent Owner’s Preliminary Response filed on August 20,
`
`2014, as Exhibits 2007 and 2012, respectively.
`
`12.
`
`I believe I am qualified to provide opinions about how one of ordinary
`
`skill in the art in November 2000 would have interpreted and understood the ‘652
`
`Patent and the art relied upon by the Petitioner as discussed below.
`
`3.
`
`LEGAL STANDARDS
`
`3.1. Obviousness
`
`13.
`
`It is my understanding that an invention is unpatentable if the
`
`differences between the invention and the prior art are such that the subject matter
`
`5
`
`IPR2014-00737 BHM Ex. 2013
`
`

`
`IPR2014-00737 (U.S. Patent 8,050,652)
`
`
`
`as a whole would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art. I further understand that obviousness is
`
`determined by evaluating: (1) the scope and content of the prior art, (2) the
`
`differences between the prior art and the claim, (3) the level of ordinary skill in the
`
`art, and (4) secondary considerations of non-obviousness. To establish
`
`obviousness based on a combination of the elements disclosed in the prior art, it is
`
`my understanding that a petitioner must identify a specific combination that
`
`teaches all limitations and establish that a person of ordinary skill in the art at the
`
`time of the claimed invention would have found it obvious to make that
`
`combination.
`
`14. To guard against hindsight and an unwarranted finding of
`
`obviousness, I understand that an important component of any obviousness inquiry
`
`is whether the petitioner has identified any teaching, suggestion or motivation that
`
`would have prompted a person of ordinary skill in the art to make the claimed
`
`combination and have a reasonable expectation of success in doing so. I
`
`understand that this test should not be rigidly applied, but can be an important tool
`
`to avoid the use of hindsight in the determination of obviousness.
`
`15.
`
`I further understand that the teaching, suggestion, or motivation may
`
`be found explicitly or implicitly: (1) in the prior art; (2) in the knowledge of those
`
`6
`
`IPR2014-00737 BHM Ex. 2013
`
`

`
`IPR2014-00737 (U.S. Patent 8,050,652)
`
`
`
`of ordinary skill in the art that certain references, or disclosures in those references,
`
`are of special interest or importance in the field; or (3) from the nature of the
`
`problem to be solved. Additionally, I understand that the legal determination of
`
`the motivation to combine references allows recourse to logic, judgment, and
`
`common sense. In order to resist the temptation to read into prior art the teachings
`
`of the invention in issue, however, it should be apparent that the expert is not
`
`conflating “common sense” and what appears obvious in hindsight.
`
`16.
`
`I understand that if the teachings of a prior art would lead a person of
`
`ordinary skill in the art to make a modification that would render another prior art
`
`device inoperable, then such a modification would generally not be obvious. I also
`
`understand that if a proposed modification would render the prior art invention
`
`being modified unsatisfactory for its intended purpose, then there is no suggestion
`
`or motivation to make the proposed modification.
`
`17.
`
`I understand that it is improper to combine references where the
`
`references teach away from their combination. I understand that a reference may
`
`be said to teach away when a person of ordinary skill in the relevant art, upon
`
`reading the reference, would be discouraged from following the path set out in the
`
`reference, or would be led in a direction divergent from the path that was taken by
`
`the applicant. In general, a reference will teach away if it suggests that the line of
`
`7
`
`IPR2014-00737 BHM Ex. 2013
`
`

`
`IPR2014-00737 (U.S. Patent 8,050,652)
`
`
`
`development flowing from the reference’s disclosure is unlikely to be productive
`
`of the result sought by the patentee. I understand that a reference teaches away, for
`
`example, if (1) the combination would produce a seemingly inoperative device, or
`
`(2) the references leave the impression that the product would not have the
`
`property sought by the patentee. I also understand, however, that a reference does
`
`not teach away if it merely expresses a general preference for an alternative
`
`invention but does not criticize, discredit, or otherwise discourage investigation
`
`into the invention claimed.
`
`18.
`
`I understand that where the party asserting invalidity establishes a
`
`prima facie case of obviousness, the burden shifts to the patent owner to come
`
`forward with objective evidence demonstrating secondary considerations of non-
`
`obviousness. I have been instructed that secondary considerations include: (1)
`
`long-felt but unsolved need; (2) commercial success of the invention; (3) failed
`
`efforts of others; (4) copying by others; (5) praise for the invention; (7) unexpected
`
`results; (8) disbelief of experts; (9) general skepticism of those in the art; (10)
`
`commercial acquiescence; and (11) simultaneous development. I understand that
`
`evidence of secondary considerations must be considered as part of all the
`
`evidence, not just when the decision maker remains in doubt after reviewing the
`
`art.
`
`8
`
`IPR2014-00737 BHM Ex. 2013
`
`

`
`IPR2014-00737 (U.S. Patent 8,050,652)
`
`
`
`19.
`
`I also understand that there must be a nexus between the claimed
`
`invention and the secondary considerations before the evidence is relevant to the
`
`question of obviousness. In particular, in the case of commercial success of a
`
`product embodying the claimed invention, I understand that the success must be
`
`shown to have in some way been due to the nature of the claimed invention, as
`
`opposed to other economic or commercial factors unrelated to the technical quality
`
`of the patented subject matter. I understand that commercial acquiescence and
`
`licensing are indicative of nonobviousness where it involves prominent or a
`
`substantial portion of the competitors in the relevant market.
`
`4.
`
`SUMMARY OF MY STUDY
`
`20.
`
`I have read the ‘652 Patent and have considered its disclosure from
`
`the perspective of a person of ordinary skill in the art in November 2000.
`
`21.
`
`I have also read and considered inter alia the ‘737 Petition for Inter
`
`Partes Review of the ‘652 Patent, the Jeffay Report, and the Institution Decision.
`
`22.
`
`I have also read the following reference upon which the Board
`
`instituted this proceeding, and considered it from the perspective of the person of
`
`ordinary skill in the art in November 2000:
`
`9
`
`IPR2014-00737 BHM Ex. 2013
`
`

`
`IPR2014-00737 (U.S. Patent 8,050,652)
`
`
`
` White et al., U.S. Patent No. 7,187,947, entitled “System and
`
`Method for Communicating Selected Information to an Electronic
`
`Device” (“White”).
`
`23.
`
`I am also familiar with a large number of other prior art references in
`
`the field of the invention, including but not limited to references cited by the
`
`Petitioner in this and related IPR proceedings and references considered by the
`
`parties in the ITC Proceeding regarding the ‘652 Patent mentioned above.
`
`5. ONE OF ORDINARY SKILL IN THE ART
`
`24.
`
`It is my opinion that the relevant field with respect to the ‘652 Patent
`
`is media file sharing. The ordinary level of skill in the art is a Bachelor’s degree in
`
`computer science or electrical engineering or its equivalent and 1-2 years of
`
`experience with media file sharing.
`
`25.
`
`In reaching the opinions contained herein, I have considered the types
`
`of problems encountered in the art in November 2000, the sophistication of the
`
`technology, and the education level and professional capabilities of workers in the
`
`field. The basis of my familiarity with the level of skill in the art is my years of
`
`interaction with large numbers of workers in the field and my knowledge of the
`
`technical issues in the field.
`
`10
`
`IPR2014-00737 BHM Ex. 2013
`
`

`
`IPR2014-00737 (U.S. Patent 8,050,652)
`
`
`
`26. The Jeffay Report indicates that “a person of ordinary skill in the art
`
`at the time of the inventions claimed in the ’652 Patent would have typically have
`
`had at least a B.S. degree in electrical engineering, computer engineering or
`
`computer science and approximately two years of professional experience with
`
`computer networking and multimedia technologies, or the equivalent.” Ex. 1015,
`
`¶4.
`
`27.
`
`In my opinion, there is no material difference in my and the Jeffay
`
`Report’s opinion of the fields of study (“computer science or electrical engineering
`
`or its equivalent” versus “electrical engineering, computer engineering or computer
`
`science”) and experience (“media file sharing” versus “computer networking and
`
`multimedia technologies”). I believe, however, that my opinion more accurately
`
`reflects the education level of workers in the field in light of the Jeffay’s Report
`
`indication that a person of ordinary skill in the art would have had “at least a B.S.
`
`degree. . .”). I believe this open-ended definition obscures the issue of what
`
`“ordinary” skill means.
`
`6. OVERVIEW OF THE ‘652 PATENT
`
`28.
`
`In 2000, when the provisional application disclosing the subject
`
`matter that was ultimately claimed in the ‘652 Patent was filed, the industry was
`
`working to aggregate or collect audio content from multiple sources. For example,
`
`11
`
`IPR2014-00737 BHM Ex. 2013
`
`

`
`IPR2014-00737 (U.S. Patent 8,050,652)
`
`
`
`some companies were developing products that aggregated content on player
`
`devices such as a personal digital assistant (PDA) or other devices with large
`
`amounts of storage. Alternatively, some companies focused instead on products
`
`that aggregated audio content centrally such that a user’s player device could
`
`receive for playback centrally-stored audio content selected by that particular
`
`device.
`
`29. While the industry was predominantly focused on the significance of
`
`the audio content in digital content distribution systems emerging in November
`
`2000, the ‘652 Patent was focused on the role of playlists in managing audio
`
`content. The ‘652 Patent relates to methods and systems for assigning playlists to
`
`one or more electronic devices and for obtaining and playing songs identified by
`
`the playlists on the electronic device(s). The role of the playlist in content
`
`distribution systems is one of the more significant innovations disclosed in the
`
`‘652 Patent—more specifically, the receipt of an assigned playlist by an electronic
`
`device enables the playlist-receiving device to obtain and play the content
`
`indicated by the playlist. For example, the ‘652 Patent describes a process that
`
`allows a user logged into a central server (which may authorize the user based on a
`
`password) to assign a centrally-managed playlist, identifying a plurality of songs
`
`aggregated from one or more remote sources, to a local electronic device. The
`
`centrally-managed playlists can thus be controlled by the user, for example, to add
`
`12
`
`IPR2014-00737 BHM Ex. 2013
`
`

`
`IPR2014-00737 (U.S. Patent 8,050,652)
`
`
`
`songs to and delete songs from the playlist. See ‘652 Patent, 23:35-45 and 24:8-12.
`
`A copy of the playlist can then be transmitted from the server to the device, such
`
`that the receiving device takes control to obtain audio content of the songs
`
`indicated in the playlist from the one or more remote sources and to play the songs
`
`identified by the playlist. See ‘652 Patent, Figures 19B-19C and 27:47-30:18.
`
`Another core innovation of the ‘652 Patent is the notion of a dual mode device that
`
`not only has the ability to be assigned a playlist, but also has the ability to receive
`
`Internet radio streams. See ‘652 Patent, Figures 1-2, 7:28-67, 8:1-57.
`
`30.
`
`In every method and system described in the ‘652 Patent, three
`
`distinct pieces of information are received or obtained by the electronic device in
`
`order to the play the songs indicated by a playlist assigned thereto:
`
`i.
`
`a playlist identifying a plurality of media items (see e.g., ‘652 Patent,
`
`4:29-30, “The playlists include titles of audio from a variety of audio
`
`sources.”);
`
`ii.
`
`information enabling the electronic device to obtain the media items
`
`(see, e.g., ‘652 Patent, 4:30-31, “The assignments provide information
`
`about the location of other web sites containing the audio sources.”);
`
`and
`
`13
`
`IPR2014-00737 BHM Ex. 2013
`
`

`
`IPR2014-00737 (U.S. Patent 8,050,652)
`
`
`
`iii.
`
`the media items themselves (see, e.g., ‘652 Patent, 4:32-33, “The
`
`software module is configured to connect through the ISP to the web
`
`sites to download the audio files.”).
`
`That is, the ‘652 Patent distinguishes between the information for identifying a
`
`song (e.g., a song title), the information for obtaining a song (e.g., a location or
`
`source from which a song identified in a playlist may be obtained), and the song
`
`itself (e.g., an audio file to be streamed or downloaded).
`
`31. Though the ‘652 Patent makes clear that the information identifying
`
`the songs (e.g., titles of songs within a playlist) is distinct from both the
`
`information used to obtain the songs and the song itself, the ‘652 Patent indicates
`
`that the information used by the electronic device to obtain the song can be
`
`received independently from the playlist or can be received together with the
`
`information identifying the songs (e.g., appended to the playlist). For example, in
`
`one embodiment, the ‘652 Patent describes a process in which each of these three
`
`distinct pieces of information are received or obtained separately:
`
`Another aspect of the present invention is a method for assigning
`
`playlists of music from one electronic device to another. First, a
`
`network connection is used for transmitting and receiving digital data
`
`over a communication network to an Internet service provider. Next,
`
`the process provides a first software module to manage playlists of
`
`14
`
`IPR2014-00737 BHM Ex. 2013
`
`

`
`IPR2014-00737 (U.S. Patent 8,050,652)
`
`
`
`songs. The software module allows a user to compose playlists from
`
`a variety of audio sources. The software module allows a user to
`
`assign a playlist from a first device to a second device. Next, the
`
`process checks the second device’s data storage space for songs listed
`
`on the assigned playlist. Next, the process accesses a server site to
`
`obtain locations of the web sites the first device downloaded its
`
`audio files from. The process then provides a second software
`
`module to connect to various web sites to download remaining songs
`
`needed for the playlist. The second software module connects if
`
`songs needed to form the playlist are not stored on the second device's
`
`data storage space. Finally, the process uploads files to the server
`
`from the first device and downloads files [to] the second device if the
`
`second software module is unable to download a file from said web
`
`site.
`
`‘652 Patent, 4:50-5:3 (emphasis added)
`
`32. However, the ‘652 Patent also provides embodiments in which the
`
`information used by the electronic device to obtain the song can be received
`
`together with the information for identifying the songs (e.g., URLs appended to a
`
`playlist identifying a plurality of songs). For example, in one embodiment
`
`described in the ‘652 Patent, the “playlist 1528” can be appended to include
`
`“associated URL’s of where the audio files were retrieved from.” ‘652 Patent,
`
`21:62-65. See also ‘652 Patent, 22:48-50 (“Within the playlist, the URL’s indicate
`
`15
`
`IPR2014-00737 BHM Ex. 2013
`
`

`
`IPR2014-00737 (U.S. Patent 8,050,652)
`
`
`
`the location from which the audio files associated with the song titles in the playlist
`
`can be downloaded.”).
`
`33. Regardless, the ‘652 Patent provides that even if the playlist and
`
`information enabling the electronic device to obtain the song are received together,
`
`the information identifying a song is different from the information used to obtain
`
`a song. In other words, while the playlist provides information identifying a
`
`plurality of songs, the information for obtaining the song is distinct from the
`
`information provided by the playlist. For example, in every portion of the ‘652
`
`Patent that explicitly shows the contents of a playlist, the title of the song is
`
`identified as being included in the playlist. See Figures 17D, 17E, 17H, 18D, 18E,
`
`18F of the ‘652 Patent. There are, however, no embodiments described in the ‘652
`
`Patent in which only a URL, for example, serves as information identifying a song,
`
`or in which a playlist consists exclusively of a list of URLs. Thus, the ‘652 Patent
`
`makes clear that while the “information enabling a song to be obtained” can be
`
`associated with the “information identifying the song,” the information enabling
`
`the electronic device to obtain a song in and of itself is not sufficient to identify the
`
`song within the meaning of the ‘652 Patent.
`
`34. The ‘652 Patent describes playlists made up entirely of songs, and it is
`
`key that a playlist meaningfully identify the songs (e.g., by title) such that the user
`
`16
`
`IPR2014-00737 BHM Ex. 2013
`
`

`
`IPR2014-00737 (U.S. Patent 8,050,652)
`
`
`
`can assign, compose, and/or manipulate the playlists and the songs contained
`
`therein. See e.g., Abstract (“A network-enabled audio device that provides a
`
`display device that allows the user to select playlists of music much like a jukebox
`
`is disclosed.”); 4:29-30 (“The play lists include titles of audio from a variety of
`
`audio sources.”); 4:54-55 (“Next, the process provides a first software module to
`
`manage playlists of songs. The software module allows a user to compose
`
`playlists from a variety of audio sources.”); and 22:48-50 (“Within the playlist, the
`
`URL’s indicate the location from which the audio files associated with the song
`
`titles in the playlist can be downloaded.”). That is, the ‘652 Patent describes a
`
`network-enabled audio device that “has a visual display for providing audio source
`
`choices to a user. The visual display also provides functions for managing audio
`
`sources.” 2:18-20. See also 3:5-7 (“The network-enabled audio device provides a
`
`display device, such as a Liquid Crystal Display (LCD) that allows the user to
`
`select play lists of music much like a jukebox.”). In one example, “the user can
`
`access the server site IPAN software 1433 through a network connection to the
`
`server site IPAN 1104 and from the server site IPAN software 1433 the user can
`
`assign playlists to different devices such as the network-enabled audio device
`
`1510, the network-enabled audio device 1520, or the client PC 1508. The user
`
`composes the playlists from the server site IPAN software 1433, but typically only
`
`stores the title of the song and the URL from which the song came. The playlists
`
`17
`
`IPR2014-00737 BHM Ex. 2013
`
`

`
`IPR2014-00737 (U.S. Patent 8,050,652)
`
`
`
`stored throughout the IPAN 1100 are also stored in the server site IPAN 1433. The
`
`user then has a master list of where all playlists are located. When the device 1510
`
`connects to the server site IPAN 1104, a playlist is assigned to it. Within the
`
`playlist, the URL’s indicate the location from which the audio files associated with
`
`the song titles in the playlist can be downloaded..” 22:36-50 (emphasis added).
`
`35.
`
`Indeed, any time in the ‘652 Patent in which a user is accessing a
`
`playlist, the songs’ titles are identified and displayed. For example, FIGS. 17A and
`
`17D (reproduced below) illustrate a “Playlist Manager window 1700 that appears
`
`when a user runs the PC IPAN client software 1532 and the server site IPAN
`
`software 1433.” See 23:32-35. “FIG. 17A shows a default display of the current
`
`playlists when the Internet Personal Area network (IPAN) manager software is
`
`started,” while “FIG. 17D illustrates the songs within a playlist and links to other
`
`devices that have the songs present on their hard disk space.” 6:10-20.
`
`
`
`18
`
`IPR2014-00737 BHM Ex. 2013
`
`

`
`IPR2014-00737 (U.S. Patent 8,050,652)
`
`
`
`36. Upon selection of a particular playlist in the playlist window 1780
`
`(e.g., “Favorites” or “Mellow Morning”), the title of the songs in the selected
`
`playlist are displayed in the title window 1720. 23:42-50 (“The display playlist
`
`and song button 1740 provides access to audio and devices such as PC’s, network-
`
`enabled audio devices 1200 and 1300, portable audio devices, etc. Access is
`
`provided as a tree control in the playlist window 1780. The playlist window 1780
`
`displays playlists, the title window 1720 displays songs in the playlist, an arrow
`
`button 1760 provides for addition of songs to playlists, and an arrow button 1799
`
`provides for deletion of songs from playlists.” (emphasis added)).
`
`37. Likewise, FIG. 18D (reproduced below) “shows a display for
`
`allowing a user to play a play list stored on the network-enabled audio device, as
`
`shown in FIGS. 12A, 12B, 13A, and 13B,” while FIG. 18E (also reproduced
`
`below) “shows a display for allowing a user to delete a song from a playlist stored
`
`on the network-enabled audio device. . . .” 6:43-48.
`
`19
`
`IPR2014-00737 BHM Ex. 2013
`
`

`
`IPR2014-00737 (U.S. Patent 8,050,652)
`
`
`
`
`
`38. Additional exemplary teachings of the ‘652 Patent are described in
`
`detail below.
`
`6.1. A Network-Enabled Electronic Device
`
`39. One aspect of the ‘652 Patent is a network-enabled audio device that
`
`allows a user to store files, to play standard audio CDs, to play MP3 encoded CDs,
`
`to record songs from CDs, to receive digitized radio broadcasts over the World
`
`Wide Web (Web), and to receive assignments of playlists of songs from other
`
`network-enabled audio devices. See ‘652 Patent, 2:58-63.
`
`40. Figure 11 of the ‘652 Patent (reproduced